Khóa luận tốt nghiệp: Protecting well-known trademarks under Vietnamese law

Reasons for selecting the research topic

Nowadays, countries are paying more and more attention to the protection of intellectual property rights because intellectual property contributes to promoting creativity for the development of society Among them, trademark protection is considered one of the most important issues In a world where global marketing and commercial activities are booming, it is increasingly easy for businesses to create a global brand

Vietnam is a strong developing country, attracting a lot of foreign investors, including leading enterprises in the world We can easily see that many world well- known trademarks have appeared in Vietnam such as Apple, Mercedes, Samsung, McDonald’s, These well-known trademarks are great assets of businesses and play an important role in the business development of those enterprises Therefore, the need to protect trademarks, especially well-known trademarks, is very urgent to create a healthy and effective investment environment, ensuring the interests of trademark owners

Understanding the importance of trademark protection, legislators and policy makers in Vietnam have been very active in developing and promulgating legal documents to more effectively protect intellectual property rights However, it is possible that because this is a relatively new issue in Vietnam, the legal regulations are still inadequate, and trademark infringement still occurs on a large scale in many different forms

Protecting well-known trademarks is crucial for fostering economic growth This thesis delves into the legal frameworks governing trademark protection in Vietnam and internationally, seeking to extract valuable lessons and propose enhancements to the domestic legal system By aligning with SEO best practices, this research aims to contribute to the development of robust trademark protection mechanisms that safeguard the interests of businesses and consumers.

Literature review

The issue of well-known trademark protection is an issue attracting great attention from researchers all over the world There have been many seminars related

8 to this issue such as: Conference on TRIPS Agreement, Conference on new industrial property objects in Vietnam Many textbooks and scientific works such as: "Textbook of Intellectual Property Law" (Ho Chi Minh City Law University) by Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor); "Intellectual Property Rights" by Le Net, Vietnam National University Press, Ho Chi Minh City, 2006; Textbook of Intellectual Property Law (Hanoi Law University) by Vu Thi Hai Yen (editor); include a part addressing well-known trademarks

Protection of well-known trademarks has been extensively studied in numerous scientific publications, including articles in "Vietnam Science and Technology Magazine" and "Journal of the State and Law." Additionally, academic theses like "Protection of well-known trademark under the provisions of Vietnamese law" and "Well-known trademark protection - A comparative study between the laws of the European Union and Vietnam" have delved into this topic.

However, the above studies only research on certain aspects of well-known trademark protection or on well-known trademark protection in other countries without a systematic research on protecting well-known trademarks under the current law in Vietnam Nowadays, well-known trademark protection is an extremely important issue for the development of the economy Therefore, this thesis is completely topical and has practical scientific significance The thesis analyzes specifically the current legal provisions of Vietnam on the protection of well-known trademarks, combined with the study of international instruments and the laws of other countries in this field From there, it proposes to improve the mechanism of protection of well-known trademarks in Vietnam

The thesis "Protecting well-known trademarks under Vietnamese law" is an independent thesis, however, the completion of this research topic is based on the collection and acquisition of knowledge and experience from relevant scientific works which have been published.

Object and purpose of research

This thesis examines the theoretical and practical aspects of protecting well-known trademarks under Vietnamese law It draws upon international comparative law and relevant international commitments to provide a comprehensive understanding of the subject matter.

- Research purposes: On the basis of inheriting and developing previous studies, the author clarifies and analyzes the content of current regulations on protection of well-known trademarks in Vietnam, with reference to international laws and laws of other countries, from which to evaluate, find shortcomings and make recommendations to improve Vietnamese law.

Research methods

The thesis is conducted based on the methodology of Marxism - Leninism to analyze legal issues in connection with economic and social issues With respect to concrete research methods, the thesis uses a combination of methods such as historical method, comparative method, analytical method, synthesis method, and statistical method The thesis is mainly based on doctrinal research, analyzing the legal documents of the State, the international instruments, and judicial decisions on well- known trademarks.

Research scope

The thesis comprehensively researches the current legal provisions on protection of well-known trademarks in Vietnam and relevant international instruments, and consults the laws of some countries in the world

Contributions of thesis

This thesis has achieved the following results:

- Clarify some theoretical issues about trademarks and well-known trademarks

- Analyze Vietnam's current legal regulations on protection of well-known trademarks

- Evaluate the current status of well-known trademark protection in Vietnam, its successes and shortcomings, and make recommendations to improve Vietnamese law on protection of well-known trademarks with reference to the laws of other countries and international commitments.

Structure of thesis

In addition to the Introduction, Conclusion and List of References, the content of the thesis consists of 3 chapters:

Chapter 1: Theoretical foundations for protecting well-known trademarks

Chapter 2: The legal framework of well-known trademark protection in Vietnam

Chapter 3: The current status of well-known trademark protection and recommendations to improve the law on protection of well-known trademarks in Vietnam

Overview of trademark

In fact, trademarks have been used for a long time to distinguish the goods and services of different traders and manufacturers According to archaeologists somewhere between 5000 and 4000 BC primitive man used signs or symbols to mark their animals or property so as to identify their rights over them 1 In Roman time, manufacturers embossed or stamped their goods with their own symbols to identify their products and distinguish them from others Nowadays, trademarks have become a valuable form of intellectual property all over the world

According to WIPO “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises” 2

The Trips Agreement regulated that “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.” 3 It can be seen that the definition of trademark in the Trips Agreement is quite broad, a trademark can be "any sign" or "any combination of signs", as long as it is capable of distinguishing the goods of different ones Thus, a trademark is not necessarily composed of one sign, but can be composed of many different signs Besides, in more detail than the definition of WIPO abovementioned, this definition indicates some signs that can become trademarks such as personal names, letters, numerals, figurative elements and combinations of colours

1 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection A comparative study between the laws of the European Union and Vietnam, page.27

2 Available at https://www.wipo.int/trademarks/en/#:~:text=What%20is%20a%20trademark%3F,protected%20by%20intellectu al%20property%20rights

3 Article 15, Agreement on trade related aspects of intellectual property rights (TRIPs)

According to European Union trademark law, a trademark can comprise any graphically representable sign, which includes words, names, designs, letters, numerals, and the shape of goods or their packaging This definition emphasizes the trademark's purpose in distinguishing the goods and services of different businesses, expanding the scope of protectable signs compared to the Trips Agreement's definition.

Under the Vietnamese legal system “trademark is any sign used to distinguish goods or services of different organizations or individuals” 4 Moreover, Article 72 (1) of the 2005 Law on Intellectual Property (as amended 2009,2019) stipulates that a trademark is protected if it is “a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours” and “is capable of distinguishing goods or services of the mark owner from those of other subjects” Basically, this definition has many similarities with the definitions of intellectual property organizations and international conventions except that under Vietnamese law only visible signs can become a trademark Thus, Vietnam does not protect non-traditional trademarks such as scents and sounds because the protection of these marks requires a country to have a high level of development, and to have sufficient basic facilities as well as the qualifications of experts

From the above definitions, it is apparent to see that now there are many definitions of trademarks that have been given, but these definitions have no fundamental difference In general, most authorities agree that a trademark should be defined as a specific sign used to separate goods or services from each other 5

From the above analysis, in my opinion “A trademark is any sign or combination of signs, including but not limited to letters, words, drawings, images, designs, devices for the purpose of identifying and distinguishing goods or services of different individuals and organizations”

4 Article 4 (16), the 2005 Intellectual Property Law

5 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study between the laws of the European Union and Vietnam, page.29

Considering the above definitions of trademark, it is clear that these definitions mainly refer to the function of distinguishing goods and services of different subjects of the trademark However, beyond that basic function, a trademark has a number of other functions that benefit the manufacturer or the consumer

Firstly, the most important function of a trademark is to distinguish products or services of different individuals or organizations Nowadays, with the development of the economy, many similar products are manufactured by different companies, and the quality of these items is also different Thanks to signs such as words, images or combinations of such signs, consumers can distinguish goods and services of the same type and choose to buy goods from their favorite manufacturers In addition, now many businesses intentionally produce goods with similar appearance, counterfeit goods to deceive consumers, so the importance of trademarks is increased because it helps consumers distinguish between goods of similar appearance

Secondly, trademarks enable consumers to identify the physical origin of the goods and service Trademarks have the ability to provide customers with information about the manufacturer or service provider bearing these trademarks, from which the customer can decide whether to purchase the product of one producer or others For example, a dishwashing liquid product bearing the trademark of a long-standing, reputable manufacturer, this type of dishwashing liquid has also been highly regarded by a number of consumers, then it is likely that this is a high quality product From that information, consumers can easily make the right choice

Trademarks serve as a quality assurance mechanism, with consumers often opting for products bearing established brand names due to their perceived reliability and prestige Successful trademarks incentivize owners to maintain their reputation by investing in product development and customer satisfaction, leading to the production of higher-quality goods and services For example, the "KFC" trademark is synonymous not only with fried chicken but also with the delectable taste associated with its restaurants.

Lastly, trademarks have economic functions A trademark that has built a reputation in the market can become a tool to advertise a company's products to

14 customers, thereby increasing business efficiency In addition, a prestigious trademark often has a great transfer value, so the transfer of rights to the trademark can also bring great profits to individuals and businesses that own that trademark

In addition, in doctoral dissertation of law “Well-known trademark protection: A comparative between the laws of the European Union and Vietnam”, Dr Phan Ngoc Tam pointed out some other function of trademark such as serving as a badge of support or affiliation, and enabling the consumer to make a lifestyle statement

A trademark has some basic characteristics as follows:

A mark must be able to be distinctive from signs used by other subjects This is because, as mentioned above, the basic and most important function of a mark is to indicate the origin of goods and services and to distinguish them from the goods and services of other subjects Customers can only be protected from confusion and deception if the trademark can affect the customer's mind, making them able to recognize and remember that type of trademark and more importantly, that mark must be exclusive, and must be different from other ones The distinctiveness of a trademark is always an important factor to consider when registering or resolving trademark- related disputes under all national as well as international laws

Trademarks encompass a wide range of forms, including characters, letters, personal names, images, symbols, colors, and combinations thereof Non-traditional trademarks, such as scents and sounds, are also recognized The breadth of trademark protection extends beyond specific signs; anything distinctive created and used by producers in compliance with applicable laws can qualify as a trademark.

In today's marketplace, a trademark is not only a sign that distinguishes goods and services, but it is also considered an asset of the enterprise (intangible property), even a trademark is an asset whose value is much higher than that of other physical assets

6 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study between the laws of the European Union and Vietnam, page 37

Overview of well-known trademarks

1.2.1 Definition of well known trademark

In today's market, countless renowned trademarks evoke immediate recognition of specific products or services, such as Coca-Cola, Toyota, and KFC These trademarks represent significant achievements for companies, but their popularity also increases the risk of infringement Consequently, implementing robust protection measures becomes essential However, defining "well-known trademarks" poses challenges due to inconsistencies in international and national regulations.

The Paris Convention does not provide a specific definition of a well-known trademark, but only defines the obligations of member States as follows: “… to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods” 9 In addition, the Paris Convention also provides for a period within which the owner of a well-known trademark can request the cancellation of the trademark infringing upon his or her well- known trademark rights Thus, the Paris Convention only provides the minimum provisions for the protection of well-known trademarks, while the determination of

9 Article 6bis, Paris Convention for the Protection of Industrial Property

18 what is a well-known trademark, the convention is left open to the member states to determine to suit the conditions and circumstances of each country

Similar to the Paris Convention, the Trips Agreement does not specify the definition of a well-known trademark This Agreement has an expansion compared to the Paris Convention when the provision of protection for well-known marks is extended to include service trademarks, not just trademarks The Agreement also recognizes general grounds for determining well-known trademarks, according to which "In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark” 10

In addition to some provisions on protection of well-known marks in international conventions, well-known trademarks are also regulated in national laws Each country has different economic and social conditions, so the issue of protection of well-known trademarks is also different “The laws of many countries have not provided a specific definition of ‘well-known trademark’ Therefore, in fact, this issue is mainly resolved by the Courts or competent agencies in each specific case” 11 However, there are also some countries that provide specific definitions of well-known trademarks Currently, China's trademark law stipulates that: "Well-known trademark is a mark widely known by the relevant section of the public in China" Vietnam's 2005 Intellectual Property Law (as amended 2009, 2019) also stipulates: “Well-known trademark means a mark widely known by consumers throughout the territory of Vietnam”

Through studying and comparing views on well-known trademarks in international law and the national laws, Dr Phan Ngoc Tam pointed out: “A well- known trademark should be understood as a trademark which is popularly known by many people within the relevant territory or is considered and recognized by the authorities of the countries regardless of where it is used or registered or not”

From the above definitions and perspectives, I draw the following definition: "A well-known mark is a mark that is widely known by the majority of people in the

10 Article 16 (2), Agreement on trade related aspects of intellectual property rights (TRIPs)

11 Phan Ngoc Tam, Le Quang Vinh, Project Research Report: Protection of Well-known trademark under

Vietnamese law – Situation and Solutions, page.29

19 relevant public sector or recognized by the authorities of the countries regardless of where it is used or registered or not”

1.2.2 Characteristics of well-known trademarks

A well-known trademark also has the main characteristics of an ordinary trademark as mentioned above such as distinctiveness, multiform, and value However, because a well-known trademark is a special type of trademark, it also has its specific characteristics:

- Widely known by the relevant consumer segment

The well-known trademark must be widely known by the relevant consumer segment So how to evaluate "widely" Each country will have a different way of determining this factor “For example, in Germany, if the results of a survey indicate that 80% or more of the people surveyed are familiar with a trademark, that trademark can be evaluated as a famous trademark, and if nearly 40% or more of the people surveyed are familiar with a trademark, that trademark is evaluated as a well-known trademark In France, other conditions are taken into consideration such that if results indicate that 20% or more of the persons surveyed are familiar with a trademark, that trademark is evaluated as a well-known trademark” 12 Moreover, the evaluation of well-known marks should also consider only relevant consumers (may be those who directly use the product or service or who are likely to know about the product or service) because the range of consumers is very large and a person cannot know the trademark with which he or she has no connection The popularity of a well-known trademark is also reflected in the fact that the mark is deeply imprinted in the minds of consumers associated with a particular type of goods or service For example, when it comes to NIKE, consumers immediately think of sports products; When it comes to Mercedes, consumers will immediately think of luxury cars

Businesses that own well-known trademarks often bring in a huge amount of revenue and profit based on selling goods or providing services bearing the mark For example, in 2021 Apple's iPhone sales is $196 billion, equivalent to 44% of total global smartphone sales in 2021 With a well-known trademark, a business can easily take

The possession of a well-known trademark provides businesses with a substantial competitive advantage By establishing trust and generating attention among consumers, companies can significantly boost their revenue The monetary value of these trademarks is exceptionally high, enabling businesses to utilize them as capital contributions, further enhancing their financial standing.

- The protected territory of a well-known trademark is wider than that of an ordinary trademark

As analyzed in the characteristics of trademarks, an ordinary trademark is only protected within the country or territory in which it is registered, not automatically protected in other countries However, for well-known trademarks, the mark can be protected in the country where the mark has not been registered or used, provided that the trademark is recognized as a well-known trademark by the competent authority in the country 13

- Long and uninterrupted time of use

A trademark that has just been born does not immediately become famous Most well-known trademarks need a long time to affirm their prestige in the market and gain the recognition and trust of consumers For example, the Japanese trademark

As mentioned, well-known trademarks bring competitive advantages and huge revenue to trademark owners, which brings many benefits to businesses, but also attracts other individuals and organizations to infringe the trademark to collect illicit profits Other entities normally infringe well-known trademarks by creating identical or similar trademarks to well-known trademarks, in order to deceive consumers, thereby increasing profits rapidly This situation is very common in all countries and it is extremely difficult to protect well-known trademarks from such infringements If infringement continues for a long time, the reputation, popularity and revenue of the well-known trademark owner can be seriously threatened Therefore, it is necessary to strengthen the law to increase the ability to protect trademarks.

Significance of well-known trademark protection

13 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and some Asian countries law, page 23

Firstly, protection of well-known trademarks is to protect the assets of enterprises A well-known trademark can be considered a priceless asset of an enterprise because it increases the business efficiency of the enterprise through the sale and provision of goods and services bearing the mark In addition, well-known trademarks are also highly valued For example, in 2021, the Apple brand is valued at

Interbrand, a global brand consultancy, values brands at $408.6 billion Brands are defined as commercial signs and can be represented by trade names, trademarks, logos, and symbols While brands and trademarks are distinct concepts, they share similarities.

Secondly, protection of well-known trademarks helps businesses retain familiar customers and attract more potential customers In fact, customers often trust reputable and well-known trademarks in the market Therefore, trademarks that are well protected and not diluted will be extremely attractive to customers and bring great benefits to businesses

Thirdly, protection of a well-known trademark is the protection of a way to promote an enterprise's image Well-known trademarks that have been imprinted in the minds of the consuming public associated with a particular type of goods will help the manufacturers to reduce advertising and marketing costs significantly

Lastly, the trademark protection mechanism is also a premise for businesses to confidently improve their products and services to increase the “well-known” of trademarks without having to worry about their trademark being infringed

In addition to the great advantage for businesses, protection of well-known trademarks also brings many benefits to consumers

Counterfeit and lookalike goods pose challenges for consumers seeking genuine products due to the deceptive use of similar or identical trademarks Well-known trademarks play a crucial role in aiding consumers' distinction between products of different origins, and they have an enhanced responsibility to fulfill this function compared to ordinary trademarks Accordingly, protecting well-known trademarks is essential to safeguard consumers' ability to make informed choices and prevent unfair competition.

22 trademarks has an important meaning in protecting the interests of consumers, avoiding confusion and damage when purchasing poor quality goods, and at the same time helping consumers reduce the time to research the product quality that they want because the products bearing well-known trademarks have affirmed a certain reputation in the market

- Significance for the overall economy

Protection of well-known trademarks creates the foundation for the birth of many well-known trademarks, helping to promote the national economy, thereby also demonstrating the development and sustainability of a country

Protection of well-known trademarks creates an effective business environment, prevents acts of unfair competition, prevents goods infringing upon intellectual property rights from entering the domestic market and creates favorable conditions for goods bearing well-known trademarks of countries to enter the market mutually.

Mechanism of protection of well-known trademarks in international law and

In the past, the issue of intellectual property rights protection, including trademark protection, was often only considered from a national perspective, but economic integration is a mandatory requirement of each country today Therefore, this issue must be considered in a broader perspective through Governments joining and signing international conventions in this area

• Paris Convention of 1883 for the Protection of Industrial property

The Paris Convention for the protection of industrial property was the result of the first international effort to standardize and simplify the protection of intellectual property rights in Member States 14 This Convention was adopted on March 20, 1883 and revised several times in the 20th century This Convention was created with the main purpose of establishing an Union of countries to protect industrial property and ensure the advantages to protect industrial property for nationals of member states in the territory of other contracting countries, or even protect the rights of nationals who

23 are not part of the Member State, but owning effective place of business in the Member State 15

The Paris Convention addresses basic issues such as the scope of industrial property protection, the principles of protection, priority of applications, and the enforcement and implementation of the Convention in member states 16 This Convention is the first international instrument mentioning the protection of well- known marks in article 6bis Article 6bis (1) of Paris Convention (as amended in 1967) regulates that: “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith” It is apparent that the Paris Convention stipulates the obligation of Member States “to refuse or to cancel the registration, and to prohibit the use” of trademarks which infringe well-known trademarks Specifically, the infringements upon well-known trademarks listed in this article include acts of reproducing, imitating (whole or the essential part of the mark) or translating a well- known mark and attaching them on identical or similar goods which can create confusion In addition, Article 6bis leaves the determination of a well-known mark open to the competent authority of the country of registration or the country in which the mark is used Article 6 further stipulates that the time limit for the owner of a well- known mark to be required to cancel the trademark that infringes his rights is not less than 5 years, especially for trademarks that are registered or used in bad faith (for example, taking advantage of the trademark's popularity to deceive customers to gain illicit profits), there is no time limit for requesting cancellation 17 However, in this case, the owner of the well-known mark must prove that the registration or use of the trademark was made in bad faith

15 See Articles 1, 2, 3 of the Paris Convention

17 See clause 2 and clause 3, Article 6bis, the Paris Convention

Article 10bis of the Paris Convention indirectly safeguards well-known trademarks by prohibiting unfair competition practices Specifically, it outlaws acts that induce confusion with a competitor's business, discredit their products or services through false claims, and make misleading statements about their goods' qualities, manufacturing, or quantity These provisions help protect well-known trademarks from tarnishment and preserve fair competition within the market.

Besides the achievements in the protection of well-known trademarks, the Paris Convention also has some shortcomings as follows:

Firstly, it can be seen that the Paris Convention is mainly aimed at stipulating the most basic principles of well-known trademark protection, so it does not provide a specific definition of a well-known mark or criteria for defining a well-known mark but leave the determination of these matters to national law However, this is also a shortcoming of this convention because the lack of common criteria to identify well- known marks makes it difficult to apply the convention because member states have very different regulations

Secondly, The Paris Convention only mentions the protection of trademarks but does not mention the protection of service marks This is quite understandable because at the time of adopting the convention, the field of commercial service had not yet developed as strongly as it is now

Thirdly, the scope of protection of well-known marks of the Paris Convention is relatively narrow when it only applies to similar or identical goods, but not to goods that are not similar or identical

In conclusion, the Paris Convention has laid the basic foundation for the protection of well-known trademarks, contributed greatly to standardizing trademark law in the world and prevented discrimination among citizens of the Contracting States for the protection of industrial property rights

The Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPs Agreement), enacted in 1994, was a great success of the Uruguay Round negotiations in improving the international trading system as well as making a significant contribution to the international legal system for the protection of intellectual property rights

One of the fundamental features of the TRIPs Agreement is that it has made the protection of intellectual property rights an integral part of the multilateral trading system represented by the World Trade Organization (WTO) and it is often described as one of the three pillars of the WTO in addition to provisions dealing with trade in goods (GATT 1947, 1994) and trade in services (GATS) 18

The main content of this agreement is the provisions related to the protection of objects of industrial property including trademarks The provisions on the protection of trademarks in general and well-known trademarks in particular are located in section 2 part 2 of the TRIPS Agreement, specifically articles 15 and 16 Specifically, Article 15 (1) provides for the definition of a trademark, according to which “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark” Article 15 (2) provides for grounds for refusal in relation to the registration procedure Article 15 (3) deals with the possibility of registration based on use Article

15 (4) stipulates that the nature of goods or services does not affect the registration of trademarks of such products Article 15 (5) deals with procedural matters including: publication of a trademark, filing of a petition for cancellation of a trademark registration and objections to trademark registration

Article 16 of the TRIPS Agreement provides for the protection of well-known trademarks, this is basically based on the article 6bis of the Paris Convention, however it has been significantly improved by supplementing the shortcomings in the Paris Convention Article 16 (1) has recognized that the protection of trademarks (including well-known marks) must include both trademarks and service marks through a provision that allows the trademark owner to prevent other subjects from using identical or similar signs for goods or services that are identical or similar to their own This shows the influence of service marks in international trade today Article 16 (2)

Vietnamese law – Situation and Solutions, page 41

26 continues to affirm that the application of Article 6bis of the Paris Convention to well- known trademarks must be applied to service marks In addition, the TRIPS Agreement has recognized that the basic criterion for determining a well-known mark is “the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark” However, the agreement has not yet provided a specific explanation for the phrase "relevant sector of the public" The TRIPS Agreement also provides for the refusal, cancellation of registration or prohibition from using a mark identical or similar to a well-known mark attached to goods which are not similar and not identical to those bearing the well-known mark if it is likely to affect the interests of well-known trademark owners and customers 19 For example, a Pepsi trademark in connection with motorcycles may be rejected because it confuses the customer about the relationship between the manufacturer of the motorcycle and the owner of the Pepsi trademark

In addition, as regards enforcement of trademark rights, Articles 41 to 61 of the TRIPs Agreement regarding enforcement of intellectual property rights include protection for well-known trademarks under Article 16 (3) of the TRIPs Agreement 20

Sub-concluding remarks

Trademark law is one of the most important areas of modern intellectual property law and plays an increasingly important role in the international trade system Trademark law always has a close relationship with other legal fields in the area of trade The formation of the well-known trademark theory has opened up a new approach to trademark protection around the world With the strong development of international trade and the booming of the Internet, the protection of well-known trademarks has become more and more important However, the concept of a well- known mark remains vague and lacks a common international understanding This concept is mainly regulated depending on the laws of each country In this chapter, I have analyzed some basic theoretical issues about well-known trademarks and ordinary trademarks, combined with reference to the well-known trademark protection mechanism in international instruments and in domestic law of some countries

Definition of well-known trademark under Vietnamese law

The term “well-known trademark” is a new concept under Vietnamese law The phrase "well-known trademark" was first mentioned in Decree 63/CP dated October

24, 1996 Accordingly, Article 6 (1) (e) provides that a sign used as a trademark is recognized as distinctive when it is not identical or confusingly similar to another person's trademark considered well-known (according to Article 6bis of the Paris Convention) However, this decree does not provide a specific definition of a well- known mark

The legal definition of a well-known trademark in Vietnam emerged with Decree No.06/2001/ND-CP, defining it as a mark for prestigious goods or services that is widely recognized However, this definition has limitations: it restricts well-known marks to goods, overlooks the importance of service marks, and lacks clear criteria for assessing prestige Additionally, the requirement for continuous use may be impractical in certain cases where a trademark has significant recognition despite sporadic use.

38 is not clear that such continuous use must be in the territory of Vietnam or all around the globe or how long the continuous use is Lastly, the geographical scope of the term is not defined The Decree does not state whether evidence of the fame of the trademark only from activities within the territory of Vietnam or elsewhere is to be considered 33

The adoption of the 2005 Intellectual Property Law can be considered as a breakthrough in the development of the legal system on intellectual property rights protection in general and trademark protection in particular in Vietnam 34 In which, the definition of a well-known mark has also been revised and improved Specifically, Article 4.20 of the 2005 Intellectual Property Law provides “Well-known trademark means a mark widely known by consumers throughout the territory of Vietnam” In general, this definition has progressed compared to the previous definition, but there are still some unresolved issues Typically, the scope of consumers mentioned in the above definition is the totality of consumers in Vietnam or only a portion of consumers related to the goods and services bearing the mentioned mark There are many different views on this issue, but in my opinion, the consumers in this definition should be the segment of consumers related to goods and services bearing the trademark because it conforms to Article 16.2 of the TRIPs Agreement and is convenient for practical application because the consumer in general is too large that cannot require a mark to be known to all consumers of all ages, classes and occupations It can be seen that the absence of a specific guiding document on the term ‘well-known trademark’ has made it difficult for the competent authorities and concerned individuals to understand and use this definition.

Criteria for identifying well-known trademarks

Determining well-known trademarks lacks global uniformity, with countries relying on their national laws and international intellectual property protection principles In Vietnam, authorities assess well-known status based on evidence provided by trademark owners and independently gathered information and documents.

33 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection A comparative study between the laws of the European Union and Vietnam, page 115

39 with the provisions of law to identify well-known trademarks The set of criteria for determining well-known trademarks specified in Article 75 of the Intellectual Property Law 2005 (as amended 2009, 2019) includes:

• The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising

A well-known trademark may be known to many consumers about its characteristics; the quality of products and services bearing the mark; the manufacturer of that product; Trademark owners who want to prove that their mark is well-known in Vietnam must provide proof that their mark is known to 'relevant consumers' It can be seen that the 'relevant consumers' factor in the 2005 Intellectual Property Law is consistent with the spirit of Article 16 (2) of the TRIPs Agreement and is also similar to the first criterion to identify well-known trademarks in WIPO's Recommendation There is no specific guidance in the legal documents to define 'relevant consumers', so 'relevant consumers' should be understood as 'actual and/or potential consumers of the type of goods and/or services to which the mark applies' (the element that identifies the

‘relevant sector of the public’ in the WIPO recommendation) Regarding the number of consumers who are aware of the trademark, Vietnamese law does not specify the exact number, so the consideration of this issue will depend on each specific case According to Article 42.3 of Circular 01/2007-BKHCN (as amended in in article 35.a of Circular 16/2016/TT-BKHCN), the number of relevant consumers can be determined through survey data of consumers who know the brand through buying, selling, using and advertising and marketing

• The territorial in which goods and services bearing the mark are circulated

The geographical scope of trademark protection depends on the extent of its use beyond the nation of origin Extensive use in multiple countries enhances the recognition of a mark as well-known This criteria aligns with the World Intellectual Property Organization's (WIPO) recommendations for determining well-known trademarks, which emphasize the importance of reputation and development in diverse markets.

35 (ii) the duration, extent and geographical area of any use of the mark

(iii) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies

• Turnover of the sale of goods or provisions of services bearing the mark or the quantity of goods sold or services provided

It cannot be denied that the popularity and reputation of a trademark will be partly reflected in the sales and service provision bearing the mark of that business Take Apple as an example: In 2021 the company's phone sales revenue is $196 billion, more than twice as much as second-place Samsung's ($73 billion) and about five times more than other phone manufacturers such as OPPO, Xiaomi That same year, Apple also reached the milestones of 2 billion phones sold All of the above numbers show that this is a very reputable trademark and the fact that Apple's trademark is protected as a well-known trademark in many countries around the world is not surprising It should be noted that Apple is a leader in selling phones globally, so determining whether their revenue and sales volume is high or low is quite simple In contrast, for other businesses, it is not so easy to assess whether their sales are high or low How does one define the level of “turn-over” received from the mark as well as the “volume” of goods sold or services supplied in order to consider a mark to be well-known? Furthermore, the provision of figures on revenue and quantity of goods sold and provided services must be assessed both in terms of territory as well as related goods and services, this evidence must be supported by other evidence 36

• Duration of continuous use of the mark

A trademark cannot build a reputation and become widely known in a short time

A company must provide their goods and services to the market for a relatively long period of time to be able to assert the prestige and quality of their products, thereby building a reputation for the trademark For example, the trademark ‘GUCCI’ appeared more than 100 years ago Vietnamese law has no specific regulations on how long a trademark must be used continuously to become well-known, nor does it specify the geographical scope in which the mark must be used continuously This makes it difficult to determine the continuous use of a trademark For example, a well-known trademark has been used continuously in the US for 100 years but has not been used in Vietnam Is the mark considered to meet the criteria for continuous use of the mark?

• Widespread reputation of goods or services bearing the mark

Duration and geographical area of trademark registrations and applications are important factors in determining the level of use or recognition of a mark The extent of use or recognition can be inferred from the duration and scope of the registrations and applications, as they provide evidence of the mark's presence in the marketplace.

36 Nguyễn Thị Vân, Master Thesis, Protection of well-known trademark under Vietnamese law, page 53

The 2005 Intellectual Property Law (as amended 2009,2019) sets out the criterion of 'widespread reputation' which is not really reasonable It is undeniable that in order to identify a well-known trademark, assessing its reputation is a very important factor, however, according to Dr Phan Ngoc Tam and Lawyer Le Quang Vinh "the prestige/reputation of a trademark (which is inherently intangible, lies deep within the collection of various information and evidence provided) only can be perceived or appreciated by inferring from the aggregate assessment of all the elements to be assessed, rather than seeking to evaluate it directly” 37 This means that the assessment of the 'widespread reputation' factor of a trademark must be based on a holistic consideration of all criteria rather than treating it as a specific criterion that can be directly proven China also once required proof of 'reputation of the mark' to identify a well-known mark (article 14 of the Trademark Law 2001) and in the 2003 Provision of the country also defined “Trademark is a mark that is widely known to the relevant sectors of the public and enjoys a relatively high reputation in China” Now all these regulations have been eliminated because it is very abstract and makes it difficult for trademark owners to prove their trademark is well-known Therefore, this criterion needs to be considered and adjusted by legislators in a reasonable way so that it is easy to apply in practice

• Number of countries protecting the mark

Famous trademarks often receive protection in numerous countries as they are prone to infringement of intellectual property rights For instance, the HONDA trademark is secured in over 100 nations, while the Valentino (Italy) trademark enjoys protection in approximately 130 countries Vietnamese law does not specify a particular number of countries where a trademark must be protected to be considered well-known Hence, the determination of well-known marks is left to the competent authority and is based on multiple factors, of which this is merely one.

• Number of countries recognizing the mark as a well-known mark

Similar to the criterion 'number of countries protecting trademarks' A trademark owner can prove his trademark is well known if he can show proof that his mark is

37 Phan Ngoc Tam, Le Quang Vinh, “Completing the legal framework for protection of well-known trademarks in Vietnam - Some solutions”, Vietnam Science and Technology Magazine No.3/2019, page 11

38 Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor), Textbook of Intellectual Property Law, Hong Duc Press, page 291

42 recognized as well known in other countries For example, a trademark owner can provide decisions to recognize a well-known mark in other countries Each country will provide different criteria for determining a well-known mark, and even if a trademark is well known in one or more different countries, it is not certain that it will be recognized as well-known in the country in which the mark is considered Basically, this criterion is just one of the criteria that will be considered by competent authorities in Vietnam to evaluate a well-known trademark

• Assignment price, licensing price, or investment capital contribution value of the mark

The determination of the commercial value of a trademark is based on the following factors: The value when the trademark is transferred, the value of investment in the trademark, the capacity/capability of the company having a trademark, the value of other assets of the company bearing the trademark, the value of the product affixed with the trademark, the market share of the product affixed with the trademark 39 Well- known trademark often have extremely high commercial value compared to other brands in the market According to the Best Global Brand 2021 ranking announced by Interbrand Apple #1 (US$408,251m) once again takes the top spot in the table, followed by Amazon #2 (US$249,249m) Having overtaken Google in 2020, Microsoft

#3 (US$210,191m) has preserved its place in the top three 40

Regarding licensing, according to article 141 of the Intellectual Property Law

2005 (amended 2009, 2019): “1 Licensing of an industrial property object means permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of the owner's right 2 Licensing of industrial property objects must be established in the form of a written contract (hereinafter referred to as industrial property object license contract)”

Industrial property object licence contract often contain the principal contents as follow: Full names and addresses of the licensor and of the licensee; Grounds for licensing; Contract type; Licensing scope including limitations on use right and territorial limitations; Contract term; Licensing price; Rights and obligations of the licensor and of the licensee 41 The licensor often sets very strict rules for the licensee to

40 Avaiable at https://mumbrella.com.au/interbrand-announces-best-global-brands-in-2021-709391

Grounds for establishing rights to well-known trademarks

The grounds for establishing rights to well-known trademarks are significantly different from those of ordinary trademarks According to the Law on Intellectual Property 2005 ( as amended 2009, 2019): "Industrial property rights to well-known marks are established on the basis of use, regardless of registration procedures" In this regard, Point 1.5 Clause 1 of Circular 01/2007/TT-BKHCN guiding the implementation of the Government's Decree No 103/2006/ND-CP dated September

22, 2006 detailing and guiding the implementation of some articles of the Intellectual Property Law on Industrial Property clearly state: "Industrial property rights to well- known marks are established on the basis of widespread use that makes that mark well- known without trademark registration When using the right and settling a dispute about the right to a well-known mark, the owner of that mark must prove his/her rights by appropriate evidence as prescribed in Article 75 of the 2005 Intellectual Property Law" Thus, unlike ordinary marks, well-known marks are automatically protected as long as the trademark owner proves the ‘well-known’ of the mark when there are problems related to the mark such as object to trademark registration applications, invalidate protection titles or settle disputes When a party wants to claim their mark as well-known, they need to present documents proving their ownership of the mark and proving that their mark meets the requirements to be considered well-known The trademark owner can provide as many documents as possible related to the criteria set out in article 75 of the 2005 Intellectual Property Law and the competent authorities (Courts or the NOIP) will review, evaluate documents then decide whether to recognize a mark as well-known or not In addition, trademarks recognized as well- known trademarks will be recorded in the List of well-known trademarks kept at the

Intellectual Property Office of Vietnam for reference information to serve the establishment and protection of intellectual property rights

It can be seen that the provisions of Vietnamese law on establishing rights to well-known trademarks are consistent with the laws of many countries around the world There are two possible reasons for this automatic protection mechanism: Firstly, the scope of protection of a well-known mark is larger than that of an ordinary mark, so the automatic protection mechanism is reasonable because a trademark may lose its

‘well-known’ status at some point if it does not meet the criteria prescribed by law Second, a well-known mark has great influence, possibly including in the countries in which it is not registered As a result, well-known trademarks are often subject to acts of infringement of intellectual property rights, which can seriously affect the interests of manufacturers, consumers and even the whole country Therefore, automatic protection is necessary.

The scope of protection of well-known trademarks

A well-known trademark necessitates substantial investment in terms of effort, time, and finances from the mark's proprietor Many globally renowned trademarks have endured for centuries and cost their owners exorbitant sums to gain popularity Well-known trademarks are often not only a source of pride for their owners but also for the nations they represent As a result, the protection mechanisms for well-known trademarks in various countries are frequently broader than those for regular trademarks, and Vietnam is no exception to this rule.

Under Vietnamese law, for ordinary marks, the scope of protection is limited to goods and services identical to, or similar to, or related to those goods or services on the list of registered trademarks For well-known trademarks, the 2005 Intellectual Property Law has set a higher level of protection when the scope of protection is extended to even goods and services that are not of the same type as those bearing the well-known mark Specifically, the 2005 Intellectual Property Law defines the following acts without the permission of the owner of a well-known mark as an infringement of the rights to the mark: “Using a sign identical or similar to a well- known mark or a sign in the form of translations or transliteration of the well-known mark for any goods or services, including goods and services that are not identical or similar and not related to goods and services on the list of goods and services bearing well-known marks, if the use is likely to cause confusion about the origin of goods or

46 give a false impression about the relationship between user of that sign with the owner of a well-known mark” It can be seen that a well-known mark is protected to both goods and services that are not identical, similar, or unrelated, but only in cases where the use of the sign being requested for protection causes confusion about the origin of goods or services or misleading about the relationship between the owner of the well- known mark and the person using the claimed mark For example, ‘Toyota’ is a well- known trademark in car manufacturing, Toyota cars are very popular in the global market A business decided to register the 'Toyota' sign for their electric fan This sign is likely to be refused protection because it can cause confusion for customers about the origin of the goods Specifically, many customers will mistakenly believe that Toyota fans and Toyota cars come from the same manufacturer and they will tend to choose to buy those electric fans because they believe in the prestige car manufacturer Toyota

Vietnamese law also has detailed regulations on what is an "identical or similar sign" Accordingly, Decree 105/2006/ND-CP detailing and guiding the implementation of a number of articles of the intellectual property law on protection of intellectual property rights and state management of intellectual property states that: : "(i) A sign is considered identical to the mark covered by protection if it has the same structure, presentation (including color); a sign is considered to be confusingly similar to a mark is covered by protection if there are a number of features that are completely identical or similar to each other in terms of structure, pronunciation, and spelling of signs, words, meanings and ways of presentation, color and confusing consumers about goods and services bearing the mark; (ii) Goods and services bearing signs which are suspected to be identical or similar in nature or related in functions or uses, and has the same consumption channel as the goods or services covered by the protection.”

It can be concluded that extending the protection scope of well-known marks compared with ordinary marks is appropriate to protect the interests of consumers and owners of well-known marks.

The term of protection for well-known trademarks

The term of protection for ordinary trademarks is the term of validity of the certificate of registration According to the 2005 Intellectual Property law "a certificate of registered mark shall be valid from the grant date until the end of ten years after the filing date and maybe renewed for many consecutive terms, each of ten years.” As for

47 well-known trademarks, formerly specified in Decree 63/CP (amended by Decree No 06/2001/ND-CP), well-known trademarks are protected in indefinite term from the date it is recognized as a well-known mark However, at present, the 2005 Intellectual Property Law (amended 2009, 2019) has no specific provisions on the term of protection for well-known trademarks, thus creating uncertainty in this regard It is understandable that at present a well-known mark is still protected indefinitely, however a mechanism is needed to remove this protection when the well-known mark no longer satisfy the conditions specified in Article 75 of the 2005 Intellectual Property Law or when this mark becomes a common name for a certain product or service (as in the case of aspirin, bikini, jeep) 42 Article L.714-6 Intellectual Property Law of the French Republic: "The owner of the mark loses the right to his mark in the event that the mark becomes a common name in the trade of a product or a service" 43 This is a provision that Vietnamese law can refer to and apply.

Rights of well-known trademark owners

Based on Article 123 (1) of the 2005 Intellectual Property Law, the rights of well- known trademark owners can be divided into four groups: (i) the right to use the well- known mark; (ii) the right to prevent others from using the well-known mark; (iii) the right to dispose of a well-known mark and (iv) the right to request protection from a competent authority

• The right to use well-known trademark

A trademark is only granted to a single subject, so the owner of the mark has the exclusive right to use that mark, and well-known trademarks are no exception However, the right to use the mark is also limited to ensure the interests of other subjects It must be recognized that, besides the subjects who have registered for trademark protection honestly, there are other individuals who register trademarks with malicious purposes such as to unfairly compete or profit from others’ trademarks Therefore, the law on intellectual property in the world in general and the 2005 Intellectual Property law in particular has provisions on the obligation to continuously use the mark According to Vietnamese law, if the trademark owner does not use the mark for five years or more, the certificate of trademark registration will be invalidated

42 Nguyễn Trọng Luận, “Protection of well-known trademarks in Vietnam – Some inadequacies and experiences from abroad”, Journal of State and Law No.2/2021, page 59

43 Nguyễn Trọng Luận, “Protection of well-known trademarks in Vietnam – Some inadequacies and experiences from abroad”, Journal of State and Law No.2/2021, page 59

(Clause 2, Article 136) It must also be added that a trademark that is not used continuously is unlikely to become a well-known trademark

Article 124 (5) of the 2005 Intellectual Property Law provides for acts of using trademarks (like well-known trademarks) including:

- Affixing the protected mark on goods, goods packaging, means of business, means of service, transaction documents in business activities

Trademarks serve as a crucial tool for businesses to identify and differentiate their offerings in the marketplace, enabling customers to easily recognize and associate specific products or services with a particular brand Notably, distinctive trademarks play a vital role in setting businesses apart from competitors Furthermore, trademarks can be applied not only to products but also to transaction documents such as contracts, ensuring that the intellectual property of the trademark owner is protected in commercial transactions.

- Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark

In commercial activities nowadays, product advertising and brand promotion are extremely important for the success of a business There is an opinion that the advertising function is also a function of the trademark When carrying out advertising activities, trademark owners can use their trademarks to increase customers' awareness of the business' products

- Importing goods or services bearing protected mark

In conclusion, the acts listed above are only allowed by the owner of the well- known mark

• The right to prevent others from using the well-known mark

Trademark holders possess the exclusive right to prevent unauthorized use of their registered marks, with the exception of specific instances outlined in Article 125(2) of the Intellectual Property Law (2005) The primary purpose of trademarks is to differentiate goods and services within their respective categories, a characteristic that is particularly pronounced for well-known trademarks By safeguarding trademark owners from unauthorized use of identical or similar marks, consumers are also protected against confusion and deception, ensuring they can make informed purchasing decisions.

49 as well as ensures social fairness” 44 Pursuant to Article 129 (1) (c) of the Intellectual Property Law 2005, it can be pointed out that the well-known trademark owner has the right to prevent others from “Registering and using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners”

In addition, well-known trademark owners can also prevent others from using other industrial property objects that are identical or confusingly similar to their well- known trademark:

- Preventing others from using a trade name identical or confusingly similar to a well-known trademark

According to Article 4 (21) under the 2005 Intellectual Property Law: “Trade name means the designation of an organization or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area” As for trademark, “trademark means any signs used to distinguish goods and services of different organizations or individuals”

It can be seen that both trade names and trademarks can be attached to goods and services circulating on the market, in addition, these two objects of industrial property also have the same function of distinguishing, although the object to distinguish is different The law on intellectual property in Vietnam sets out the following principles:

"Industrial property rights may be invalidated or banned from use if they conflict with the intellectual property rights of organizations or individuals that are pre- established" 45 In fact, there are many businesses that use the proper name in the trade name (for example, Quoc Dat Joint Stock Company, "Quoc Dat" is the proper name) as a trademark or a strong part in the mark For example, Tuong An Vegetable Oil Joint Stock Company owns the trademark 'Tuong An' (this is called the overlapping

44 Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor), Textbook of Intellectual Property Law, Hong Duc Press, page.327

50 intellectual property rights) 46 In addition, customers in the market mainly do not remember the full trade name of an enterprise, but often only remember the proper name such as 'Masan', 'Trung Nguyen' Therefore, it is a legitimate right to prevent others from using a trade name which is identical to or similar to the trademark of the owner, especially for well-known trademarks because they are always target for copying, imitation for illicit gain

The provisions of Vietnamese law are quite consistent with the spirit of article 5 (1) (a) of WIPO's Recommendation: A business identifier shall be deemed to be in conflict with a well-known mark where that business identifier, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and where at least one of the following conditions is fulfilled: (i) the use of the business identifier would indicate a connection between the business for which it is used and the owner of the well-known mark, and would be likely to damage his interests; (ii) the use of the business identifier is likely to impair or dilute in an unfair manner the distinctive character of the well-known mark; (iii) the use of the business identifier would take unfair advantage of the distinctive character of the well- known mark

- Preventing others from using their well-known trademark as a geographical indication

The 2005 Intellectual Property Law stipulates “Geographical indication means the sign used to identify a product as originating from a specific region, locality, territory or country” 47 Compared with trademarks, geographical indications have an important similarity that these two objects are meant to provide information to consumers so that they can easily choose products among a multitude of similar products on the market Thus, it can be seen that geographical indications and trademarks are both signs with informational purposes, so it can completely lead to trademark infringement coming from geographical indications

- Preventing others from using their well-known trademark as a industrial design

According to Article 72 (1) a mark to be accepted for protection must satisfy the condition that “it is a visible sign in the form of letters, words, drawings or images

46 See more at “Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor), Textbook of Intellectual Property Law”, Hong Duc Press, page 366

47 Article 4 (22), the 2005 Intellectual Property law

51 including holograms, or a combination thereof, represented in one or more colors” As for industrial design, “Industrial design means the outward appearance of a product embodied in three dimensional configuration, lines, colors or a combination of such elements” 48 Reading the above two definitions, it is easy to see the intersection between trademark and industrial design Especially for product packaging, when these packages achieve the ability to distinguish (help consumers identify that product and products of the same type in the market), then the product packaging can be transformed into a trademark, the case of a Coca-Cola soft drink bottle is a typical example 49 For the above reasons, the law allows the owner of a well-known mark to prevent others from using an industrial design that is identical or similar to his/her trademark, which causes confusion for customers

• The right to dispose of a well-known mark

Trademarks hold significant value as intangible assets, granting owners the authority to transfer ownership, license use, or bequeath them While assignment of trademark rights or licensing must be formalized through written contracts, licensing generates substantial revenue for owners, particularly those with well-known marks To protect consumer interests and societal benefits, certain limitations exist: rights assignment must remain within the scope of protection, avoid confusion regarding product/service origin, be restricted to organizations or individuals eligible for mark registration, require licensees to indicate licensed production, and prohibit the licensing of collective marks outside the owning group.

49 Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor), Textbook of Intellectual Property Law, Hong Duc Press, page 232

52 kind of property according to the provisions of the 2015 Civil Code of Vietnam or by will

• The right to request protection from a competent authority

In the event of an infringement of the rights to a well-known mark, the trademark owner can request the competent authority to take protective measures Depending on each case, the competent authorities will apply administrative, criminal, civil or control of imported goods Some competent authorities to protect intellectual property rights in general and well-known trademarks in particular are: People's Court, Inspector of the Ministry of Science and Technology; Police investigation of crimes related to economic management order and positions, Customs, Market management, People's Committee

Some of the claim rights that a well-known trademark owner can exercise to claim protection of his or her well-known trademark rights are:

- Initiate a civil lawsuit to request the cessation of well-known trademark infringement acts and compensation for damages

- Report to the Public Security agencies for these agencies to consider and handle violations according to the provisions of the Criminal Code if there are signs of crime

Enforcement of rights to well-known trademarks

2.7.1 Determination of infringements against well-known trademarks

As analyzed above, trademark owners have the exclusive right to use their trademarks Therefore, acts of using a protected well-known mark without the permission of the owner are considered an infringement of the rights to a well-known mark

According to Article 129(1)(d) of the Intellectual Property Law, infringement of well-known mark rights occurs when unauthorized use of identical or similar signs, including translations or transcriptions, is made for goods or services, regardless of their similarity or relation to those covered by the well-known mark Such use must have the potential to cause confusion or deception about the origin or relationship of the goods or services to the well-known mark owner.

Decree 105/2006/ND-CP ( as amended by Decree 119/2010/NĐ-CP) has clearly defined the criteria for evaluating acts of infringement of intellectual property rights as follows:

(i) The subject under consideration is within the scope of subjects being protected by intellectual property rights

According to the 2005 Intellectual Property Law, a well-known trademark does not need to be registered for protection, it is automatically protected as long as the trademark owner proves that the mark is well-known according to the criteria in Article

75 of the Intellectual Property Law Thus, in the event that a trademark owner can provide evidence to prove that his or her trademark is well-known, his/her trademark is completely within the scope of protection under the Intellectual Property Law

(ii) There are elements of infringing well-known trademarks

According to Article 11 (1) of Decree 105/2006/ND-CP, trademark infringement occurs when a sign affixed to goods, their packaging, or other business materials is identical or confusingly similar to a protected trademark This includes signs displayed on transaction documents, signboards, advertising, and other means of commerce.

To determine the element of trademark infringement, it is necessary to compare the suspected sign with the protected mark and compare the products and services bearing that sign with the products and services bearing the protected mark However, for well-known marks, the consideration mainly focuses on comparing the suspected sign with the well-known mark because the protection of the well-known mark extends to all goods and services (including unrelated goods and services), so the consideration related to goods and services is not an important factor but only helps to determine the

54 extent of the infringement Thus, the two main types of acts that are considered to have elements of trademarks infringement are:

Firstly, using a sign identical to a well-known mark for any goods or services is likely to cause confusion as to the origin of the goods or to give a false impression of the relationship between the user of that sign and the well-known trademark owner Decree 105/2006/ND-CP stipulates “A sign is considered identical to the protected mark if it has the same structure, presentation (including color)” In other words, the act of using the sign has no difference or difficulty to distinguish in its overall structure, content, meaning and form from well-known trademarks on any goods or services For example, a candy company in Ho Chi Minh City was declared to be infringing its rights to a well-known trademark when it used the trademark 'Honda' of Honda Motor Company, Ltd (Japan) for its candy products Although confectionery products (class 30) do not have any connection with the goods and services of Honda Motor Company (mainly group 12), it is easy to cause confusion about the relationship between the products and services of ‘Honda’ trademark owner and candy company in this situation 50

Secondly, using a sign similar to a well-known mark for any goods or services is likely to cause confusion as to the origin of the goods or to give a false impression of the relationship between the user of that sign and the well-known trademark owner

A sign is considered to be similar to a well-known mark if it has certain characteristics that are completely identical or similar to that of a well-known mark, in terms of structure or content or pronunciation, phonetic transcription of signs, words, meanings, presentation, colors making consumers mistakenly believe that the two objects are one, or that one object is the variation of the other, or that the two objects have the same origin 51

Analyzing more specifically, a sign considered similar to a well-known mark in terms of structure is a sign that in its structure contains all or a substantial part of the well-known mark (the part that has the biggest impact on the consumer’s mind) and all or a substantial part of the well-known mark constitutes the substantial part of that sign

In other words, the structure of the sign is created by adding minor new components to

50 Nguyễn Thị Pha, Master thesis, Acts of infringing upon industrial property rights to trademarks according to

55 the well-known mark or to the substantial part of the well-known mark or by removing the minor component from the well-known mark or altering a minor component of the well-known mark Usually, in relatively long signs, there will be a substantial part (usually self-generated, unique words) and a secondary component (usually descriptive, not highly distinguishable) A sign that is identical to a substantial part of a well-known mark will often remain confusingly similar For example, the trademark

‘Nestle Gold’, Nestle is the substantial part, Gold is the secondary part

A sign is considered to be similar in content if the whole or a substantial part of the sign expresses the same object or expresses an object similar to the content of the well-known mark In addition, signs and trademarks that are two different languages but have the same meaning in a given language can still be considered similar A typical case is that Hong Ha Stationery registered ‘Hong Ha’ trademark in the US Initially, the trademark 'Hong Ha' was rejected because it had the same meaning as the trademark 'Red River' of Red River Paper, Inc (USA) for the same product (group 16) Hong Ha's representative later objected and gave the following argument: the number of people who use the Vietnamese language in the US is very small (only 0.33% of the

US population); Hong Ha's trademark differs from Red River's brand by a combination of letters and pictures; According to US trademark examination practice, semantic similarity no longer matters much in assessing the likelihood of confusing similarity if marks differ in presentation, pronunciation, or other factors After that, USPTO accepted the above argument and registered the trademark "Hong Ha, pic" 52 From that, it can be concluded that the assessment of the translation factor in each specific case needs to be evaluated in the totality of related signs

A mark is deemed similar to a well-known mark if it shares a substantial or complete stylistic resemblance This similarity visually confuses consumers by evoking the well-known mark's appearance Moreover, in cases where color is the primary element of a well-known trademark, similar color schemes and arrangements can also lead to confusion.

For example, the trademark registration 'MC' of Sao Thai Duong Joint Stock Company has been refused protection because it is confusingly similar to the well-

52 See details on this case in the thesis “Nguyễn Thị Pha, Master thesis, Acts of infringing upon industrial property rights to trademarks according to Vietnamese civil law”

56 known trademark 'MCDONALD’S' even though the company's products belong to group 3, different from group 29, 30, 42 of MCDONALD’S 54

In addition, Article 125 (2) of the 2005 Intellectual Property Law stipulates a number of acts that are not considered infringing upon the rights of well-known trademark owners as follows:

Products legally introduced to the market, both domestic and international, can be freely distributed, imported, and utilized, excluding those introduced to foreign markets by parties other than trademark owners or their authorized representatives.

Vietnam's trademark policy aligns with global standards, fostering a robust trademark system Despite the novelty of well-known trademark protection in the country, Vietnam's legal framework provides a solid foundation for protecting these valuable assets.

67 thanks to the efforts of researchers, legislators and policy makers, Vietnam has achieved remarkable results in well-known trademark protection The 2005 Intellectual Property law (amended 2009, 2019) together with guidance instruments have created a relatively complete mechanism for protection of well-known trademarks, thereby solving many legal issues such as: well-known trademark definition, criteria for identifying well-known mark, well-known trademark protection scope, … However, the application of legal provisions on well-known trademark protection in practice is not really effective despite many attempts to improve

The current status of well-known trademark protection in Vietnam

3.1.1 The current status of well-known trademark infringements in Vietnam

Since the introduction of the 2005 Intellectual Property Law (amended in 2009, 2019) and many related guidance documents, the protection of industrial property rights in general and well-known trademarks in particular has been improved significantly However, the State's efforts in promulgating new legal policies have not been able to completely solve the problem of intellectual property rights infringement in Vietnam

We all know that trademarks and other types of intellectual property bring great commercial value to the right holder, so these assets are always the target that many bad actors aim to take advantage of Currently, the situation of trading, exporting and importing fake goods and goods infringing well-known trademarks in Vietnam is extremely complicated Counterfeit goods often imitate famous brands or have similar designs of goods bearing well-known trademarks, but the quality is extremely bad, causing many harm to consumers More dangerously, these types of counterfeits appear on the market for all kinds of goods, especially consumer goods Some areas that are frequently affected by infringements of well-known trademark rights are as follows:

- Cosmetics industry: Counterfeit and poor quality cosmetics are widely traded in Vietnam, with over 50% of cosmetics in the domestic market being considered fakes and imitations of famous brands 66 Every year, the functional forces of Vietnam seize many tons of cosmetics of unknown origin, poor quality but labeled with well-known trademarks such as Channel, Lancome, For example, at the end

66 ICC BASCAP, Promotion and protection of intellectual property rights in Vietnam, Available at https://cms.iccwbo.org/content/uploads/sites/3/2019/05/bascap-vietnam-country-report-translation-vietnam- vnm.pdf

69 of December, 2021, the Market Management Department (MMD) of Hai Duong province coordinated with functional agencies to unexpectedly inspect a cosmetic manufacturing facility located at Tran Hung Dao street, Kinh Mon district At the time of inspection, it was discovered that this establishment, owned by Mrs N.T.L., was producing and packing a huge volume of up to thousands of cosmetic products All products manufactured here are labeled with domestic and foreign brands, but cannot produce documents and procedures related to production activities 67 This is just one case among thousands of cases that are checked and discovered by the authorities across Vietnam every year

- Alcohol: According to the Vietnam Association of Anti-counterfeiting and Brand Protection, 60% of alcohol products imported into Vietnam are stamped with fake stamps In another related incident, the survey results at liquor stores at Lao Bao border gate, Quang Tri province showed that 98% of foreign alcohol is fake 68 Alcohol counterfeiters are increasingly sophisticated in counterfeiting, especially well-known trademarks Many subjects put poor quality alcohol in bottles of famous brands to resell, many fake bottles, fake trademarks, even certification stamps can be faked For example, the Hanoi City Police have coordinated with the Hai Phong City Police, Thanh Hoa Province and Nghe An Province to seize nearly 5,000 bottles of fake wine, including a collection of alcohol products with fake labels of brands Labels of famous wine brands from Germany, Australia, Scotland and the US were all faked in this case 69

- Medical care: Counterfeit medicines are widely traded in Vietnam, causing serious harm to consumers' health In March 2016, 9 individuals in a private pharmaceutical enterprise with an office in Ho Chi Minh City were prosecuted for smuggling counterfeit cancer drug products valued at over $251,000 70 In particular, during the COVID-19 pandemic period, infringements of Intellectual Property Rights occurred a lot in items related to epidemic prevention and control

67 Available at https://vietnamnet.vn/my-pham-gia-nhap-lau-tran-lan-814302.html

70 such as masks, protective gear, medical gloves,… In particular, the drug

‘Molnupiravir’ is a drug to treat Covid 19 and can only be used according to the instructions of medical staff, but many individuals have sold this trademarked drug on the Internet These drugs are mainly counterfeit drugs or from unknown origin

Furthermore, according to a 2014 report by the United Nations Population Fund (UNFPA), nearly half (47%) of condom products sold in Vietnam do not meet quality standards However, many of those products are still sold under well- known brands like Durex, making customers believe they are buying genuine, good quality products 71

Just by looking at some of the above information, we can clearly see that well- known trademark infringement in Vietnam is rampant and with a high degree of seriousness Therefore, it is necessary to seriously consider and find solutions to improve this situation, especially in the context that Vietnam participates in many new generation FTAs (these agreements set very high standards for protection of intellectual property rights)

3.1.2 Some disputes related to well-known trademarks in Vietnam

INTERBRAND GROUP is a company registered in the UK and Wales Business Registry This company has been granted Trademark Registration Certificate No

14617 by the National Office of Intellectual Property (NOIP) for the trademark 'INTERBRAND' for goods and services of groups 35, 36, 42 Business registration lines of the plaintiff and the defendant overlap in many areas including promotion, pricing and branding The Plaintiff requested the Court to declare the defendant to stop performing infringements on the plaintiff's rights to the well-known trademark 'INTERBRAND' under Articles 129, 130 of the 2005 Intellectual Property Law, including: (i) Using the 'INTERBRAND' sign as the defendant's trademark in its business; (ii) Using a trade name (abbreviated as INTERBRAND JSC) containing the sign 'INTERBRAND'; (iii) Using the domain name www.interbrandvn.com The plaintiff argued that the acts of using the sign 'INTERBRAND' such as trade names,

71 trademarks and domain names of the defendants caused confusion to consumers about business subjects and business activities

The plaintiffs made the following arguments: (i) the plaintiff is a leading company in brand valuation in the world and has become a well-known trademark; (ii) Plaintiffs have been familiar with Vietnamese consumers in the relevant field since

2001 after valuing the brand for Asia Pacific Breweries Ltd; (iii) Plaintiff has been recognized as a well-known trademark by the NOIP since 2006, so the NOIP refused to protect ‘Interbrand’ trademark for another company even though this company filed for trademark registration first

In the official response to the official dispatch of the Ho Chi Minh City People's Court on the trademark 'INTERBRAND', the NOIP also recognized INTERBRAND as a well-known trademark based on the following grounds: ‘INTERBRAND’ trademark is recognized by consumers widely known by using the service and advertising since

INTERBRAND, established in 1974, has gained significant global recognition for its services The value attributed to the INTERBRAND Group and its services is substantial The INTERBRAND trademark has achieved a high level of brand reputation, contributing to its widespread recognition in Vietnam.

As for the defendant, despite being summoned, this company did not participate in the court session, did not present any evidence, or refute the plaintiff's request

The Ho Chi Minh City People's Court granted the plaintiff's claim in full, considering the arguments and evidence presented, consulting with the National Office of Intellectual Property (NOIP), and adhering to Vietnamese law.

Some drawbacks and recommendations to improve Vietnamese law on protection

3.2.1 Some drawbacks of Vietnamese law on well-known trademark protection

- The definition of well-known trademark

Under the 2005 Intellectual Property Law, a "well-known mark" in Vietnam must be widely known by consumers nationwide, irrespective of class, age, occupation, or gender This definition differs from TRIPS Agreement Article 16, which defines well-known trademarks based on recognition within the relevant public sector Experts argue that the Vietnamese requirement is too stringent, as well-known trademarks should only be considered within the specific market sector relevant to their products or services.

- The criteria for the determination of well-known trademarks

According to Article 75 of the 2005 Intellectual Property Law: “The following criteria shall be taken into account when considering whether or not a mark is well known: (i) The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising; (ii) The territorial area in which goods or services bearing the mark are circulated; (iii)

Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided; (iv) Duration of continuous use of the mark; (v) Wide reputation of goods or services bearing the mark; (vi) Number of countries protecting the mark; (vii) Number of countries recognizing the mark as a well known mark; (viii) Assignment price, licensing price, or investment capital contribution value of the mark.” This provision also has some drawbacks as follows:

Firstly, concerning “ (i) the number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising”, this regulations easily lead to the understanding that trademark owners who want to prove their trademarks are well-known need to specify the exact number of consumers who are aware of their trademarks This seems impossible to do In addition, the law does not specify the number of consumers who are aware of the mark to meet the conditions of a well-known trademark Similarly in factor (vi) (vii), the 2005 Intellectual Property Law does not define how many countries that protect and recognize a trademark are sufficient to determine that a trademark is well-known in Vietnam The above regulations require defining 'the number', but there is a lack of quantitative regulations for easy application in practice

Secondly, considering factor (v), as analyzed in section 2.1.2, 'Wide reputation' is an abstract factor and in order to prove this factor, it is necessary to consider all factors as a whole Therefore, this factor cannot be considered as one of the conditions that must be directly proven to serve as a basis for identifying a well-known mark

Thirdly, the definition of a well-known mark in article 4 (20) seems to contradict element (i) in determining a well-known mark in article 75 In particular, a well-known mark is defined as a mark widely known by consumers throughout the territory of Vietnam, different from this definition, proving a mark is well-known only needs to consider the relevant customer It can be seen that factor (i) in article 75 is quite consistent with the spirit of article 16 (2) of the TRIPs Agreement and factor (i) in WIPO's recommendation on defining a well-known mark "the degree of knowledge or recognition of the mark in the relevant sector of the public" In addition, in Article 18.22 of the CPTPP Agreement (Vietnam is a member) also stipulates: "In determining whether a mark is well known in a member State, that State does not need to claim that the mark's reputation extends beyond the sector of the public normally dealing with the

84 respective goods or services" 85 Thus, it can be seen that element (i) in article 75 is consistent with international instruments to which Vietnam is a member State, so it is necessary to amend the definition of the well-known trademark under Vietnamese law

Lastly, Article 75 of the 2005 Intellectual Property Law only lists the criteria for determining well-known marks without any guidance on how to apply these criteria Specifically, this law does not specify that a well-known trademark must satisfy all 8 criteria or only some of the 8 criteria mentioned above Besides, when considering the factors to evaluate a well-known mark, can the competent authorities use factors that are not included in the factors mentioned in article 75? It is the absence of specific guidelines on the above issues that make it difficult for the authorities to identify well- known trademarks

Article 74 (2) (i) stipulates that a mark is indistinctive if it falls into the following cases: “Signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark”

From this regulation, the following problems can be observed:

The subjective opinion of examiners in assessing well-known marks poses a challenge Article 74 (2) (i) may lead to examiners rejecting signs due to perceived similarity to well-known marks However, this assessment lacks objective criteria, violating the guidelines outlined in Article 75.

The absence of a defined principle for determining well-known trademark status in this law creates potential issues A mark may be denied protection due to its similarity to a well-known mark, even if the well-known status of the reference mark was not established until after the application for registration of the challenged mark.

3.2.2 Some recommendations to improve Vietnamese law on well-known trademark protection

85 Nguyễn Trọng Luận, “Promotion and protection of intellectual property rights in Vietnam - Some shortcomings and experiences from abroad”, Journal of State and Law No 02/2021

- Amending the definition of well-known trademark

Article 4 (20) of the 2005 Intellectual Property Law on definition of well-known marks should be amended to: "Well-known trademark is a mark that is widely known by the relevant public sector in the territory of Vietnam" This amendment will help the definition of a well-known mark under Vietnamese law be more harmonized with international instruments such as the TRIPs Agreement or WIPO's Recommendation Furthermore, this amendment also overcomes the contradiction between the definition of a well-known mark and element (i) in article 75 In addition, it is necessary to issue a regulation to clarify the concept of the phrase "relevant public sector" In this regard, Vietnamese law should have a strategy to internalize regulations on relevant public segments in WIPO recommendations In the WKTM Project, the research team has the following recommendations: "The relevant public is understood as a group of consumers who are related to a certain category of goods/services bearing a trademark, manufacturer or supplier of goods/services, the seller and others participating in or related to the channel of distribution of such goods/services" 86

- Amending Article 75 of the 2005 Intellectual Property Law

Firstly, concerning factor (i) “the number of relevant consumers who were aware of the mark” As mentioned above, it is impossible to determine the exact number of customers involved who are aware of a trademark Therefore, it is recommended to remove the phrase "the number" and instead specify the percentage of relevant customers who know the trademark which may be accepted as borderline for determining a well-known trademark For example, factor (i) can be specified as follows: “The percentage of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising” However, it is necessary to have detailed regulations guiding how many percent of relevant customers to be considered a well-known trademark In addition, it is necessary to specify the number of countries that protect and recognize a mark as well-known, then that mark is considered well-known in Vietnam

Secondly, remove factor (v) Wide reputation of goods and services bearing the mark It can be affirmed that reputation is the main characteristic to evaluate a well- known trademark, however, the reputation of goods or services can only be assessed

86 through the combined assessment of all factors (all factors in clause 75 and possibly many more) In other words, proving the widespread reputation of the goods and services bearing the mark or the wide reputation of the mark is almost the same as proving a trademark is well-known, so it cannot be considered as a factor to be considered in the evaluation of a well-known trademark

This chapter focuses on analyzing the current status of well-known trademark protection in Vietnam In general, Vietnam currently faces many challenges related to infringements of intellectual property rights in general and rights to well-known trademarks in particular Although many preventive measures have been implemented, the effectiveness of handling well-known trademark infringements is not as expected, leading to rampant intellectual property rights infringement Through analyzing the current status of well-known trademark protection in Vietnam, the author also points out some shortcomings of the law and proposes amendments to increase the effectiveness of well-known trademark protection systems

Trademarks, especially well-known trademarks, are great assets of every business, they play an important role in production, business and market competition Therefore, businesses today are increasingly interested in protecting their trademarks

It is undeniable that the efforts of legislators in perfecting the law on intellectual property and the law on trademarks in our country today Basically, the trademark law in our country is consistent with the international agreements to which we are a Member State However, besides that, there are still many shortcomings, many regulations are still general and unclear, making it difficult to apply in practice Therefore, we need to continue to learn and absorb international experiences so that we can amend and perfect the domestic trademark law system

My graduation thesis comprehensively examines the protection of well-known trademarks under Vietnamese law, offering recommendations tailored to the specific context of the country Through in-depth analysis, the thesis provides valuable insights to inform the ongoing development of intellectual property law in Vietnam.

1 The 2005 Intellectual Property Law (as amended 2009, 2019)

4 The 2015 Criminal Code (as amended 2017)

5 The 2012 Law on Handling administrative violations (as amended 2020)

6 Circular 01/2007/TT-BKHCN Guiding the implementation of the Government's Decree No 103/2006/ND-CP dated September 22, 2006 detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property

7 Circular 16/2016/TT-BKHCN Circular Amending and supplementing a number of articles of Circular No 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No 103/2006/ND-CP dated September 22, 2006 of the Government detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property, as amended and supplemented according to Circular No 13/2010/TT-BKHCN dated July 30, 2010, Circular No 13/2010/TT-BKHCN dated July 30, 2010 No 18/2011/TT-BKHCN dated July 22, 2011 and Circular No 05/2013/TT-BKHCN dated February 20,

8 Decree 105/2006/ND-CP Detailing and guiding the implementation of a number of articles of the Intellectual Property Law on protection of intellectual property rights and state management of intellectual property

9 Decree 99/2013/ND-CP Regulations on sanctioning of administrative violations in the field of industrial property

10 Decree 126/2021/ND-CP Amending and supplementing a number of articles of the decrees on sanctioning of administrative violations in the field of industrial property; standards, measurement and quality of products and goods; scientific and technological activities, technology transfer, atomic energy

11 Decree 103/2006/ND-CP Detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property

1 Ho Chi Minh City People's Court, Judgment No 1388/2012/KDTM-ST on intellectual property rights infringement disputes (Interbrand trademark dispute)

1 Paris Convention for the Protection of Industrial Property

2 Agreement on trade related aspects of intellectual property rights

3 WIPO, Joint Recommendation Concerning Provisions on the Protection of Well- Known Marks

1 The 2013 trademark law of China

2 the 2014 Provisions on the Determination and Protection of Well-Known Trademarks (Chinese Law)

3 The Trademark Law of Japan

4 The JPO Guidelines (Japanese Law)

1 Nguyễn Hải An, Phạm Thị Diệp Hạnh,“Trademark Dilution - Laws and Practices in the US and Vietnam”, Jurisprudence Journal No 9/2019

2 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and some Asian countries law, Hanoi Law University, 2018

3 Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor), Textbook of Intellectual Property Law, Hong Duc Press, 2021

4 Vũ Thị Phương Lan, “Well-known trademarks and protection of well-known trademarks by 'defensive mark' tool in Japan”, Jurisprudence Journal No 8/2019

5 Nguyễn Trọng Luận, “Promotion and protection of intellectual property rights in Vietnam - Some shortcomings and experiences from abroad”, Journal of State and

6 Phạm Thị Hồng My, “Judgment comment: registration, use of domain names identical or confusingly similar to trademarks”, Journal of the Profession of law,

7 Nguyễn Thị Pha, Master thesis, Acts of infringing upon industrial property rights to trademarks according to Vietnamese civil law, School of Law, Vietnam

8 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection

A comparative study between the laws of the European Union and Vietnam,

Faculty of Law – Lund University, 2011

9 Phan Ngoc Tam, Le Quang Vinh, “Completing the legal framework for protection of well-known trademarks in Vietnam - Some solutions”, Vietnam Science and Technology Magazine No.3/2019

10 Phan Ngoc Tam, Le Quang Vinh, Project Research Report: Protection of Well- known trademark under Vietnamese law – Situation and Solutions, Hanoi, 2017

11 Ha Thi Nguyet Thu, “Completing the law on protection of well-known trademarks in Vietnam in the context of international economic integration” http://lapphap.vn/Pages/TinTuc/207269/Hoan-thien-phap-luat-ve-bao-ho-nhan- hieu-noi-tieng-o-Viet-Nam-trong-dieu-kien-hoi- nhap-king-te-quoc-te.html;

12 Nguyễn Thị Vân, Master Thesis, Protection of well-known trademark under Vietnamese law, School of Law, Vietnam National University, Hanoi, 2010

13 Xiao Mu, Doctor of Philosophy, The Evolution of Well-Known Trademark Protection in China, School of Law, 2016

Tiêu đề	Protecting Well-Known Trademarks Under Vietnamese Law
Tác giả	Trịnh Quốc Đạt
Người hướng dẫn	Dr. Nguyễn Bích Thảo
Trường học	Vietnam National University School of Law
Chuyên ngành	Law
Thể loại	Graduation Thesis
Năm xuất bản	2022
Thành phố	Hanoi

Định dạng
Số trang	92
Dung lượng	1,14 MB